When district courts decide patent matters, they must typically look to the Federal Circuit: as the appellate court with exclusive jurisdiction over patent litigation, its precedential decisions bind the lower courts on patent-related issues. However, convenience transfers present an interesting wrinkle: since they are governed by a venue statute not specific to patent cases, the Federal Circuit must apply the law of the applicable regional circuit court when resolving disputes over such motions. As a result, for appeals of convenience transfer decisions from the Western District of Texas, it is the law of the Fifth Circuit—albeit, as interpreted by the Federal Circuit—that applies. It is for this reason that a new precedential venue ruling from the Fifth Circuit, In re: Planned Parenthood, could force the Federal Circuit to rethink its approach to a variety of issues, including district judge discretion, the location of evidence, and the cost of attendance for witnesses, that have been at the center of the latter court's series of mandamus rulings involving Waco District Judge Alan D. Albright. The impact of that decision is now being debated by two parties in his court, Motion Offense LLC and Google, while two other plaintiffs linked to Motion Offense have hit the defendant with new complaints of their own.
As reported extensively by RPX (see, e.g., here), Judge Albright has tended not to grant motions for transfer on convenience grounds since taking the bench in 2018, setting a high bar for defendants seeking that relief. This drew the attention of the Federal Circuit, which began reversing him on that issue—identifying various legal errors underpinning his application of the substantive transfer factors—starting with a handful of mandamus decisions in 2020 and followed by 18 more in 2021, including nine in the fourth quarter alone.
Chief among the legal errors identified by the Federal Circuit, per those decisions, was that Judge Albright had underweighed the convenience for and/or cost of attendance of witnesses, discounted sources of proof in the transferee district, and misapplied factors related to compulsory process and willing witnesses. The court also flagged as erroneous the manner in which Judge Albright has counted a defendant's generalized presence in the district—e.g., through local offices not connected to acts as infringement—as supporting the "local interest" factor. And a particularly long-standing issue, among those dating back to reversals in 2020, was Judge Albright's argument that his district's quick time to trial tips the "court congestion" factor against transfer. However, the pace of mandamus reversals slowed in 2022, as Judge Albright began to adjust his approach in response to the Federal Circuit's rulings—though not always to that court's satisfaction.
Those prior appellate rulings factored heavily into Judge Albright's August 29 transfer decision in the Motion Offense case against Google, as minorly amended at the plaintiff's opposed request in early November 2022. After first evaluating the credibility of Google's venue declarant—finding that he was credible, had found evidence in favor of transfer, and acted independently, in contrast to his conclusions in certain other recent rulings—Judge Albright proceeded to address arguments from Motion Offense related to the allegedly improper application of Fifth Circuit law. Specifically, the plaintiff argued that the court should reject the Federal Circuit rulings cited by Google in favor of transfer, asserting that "Fifth Circuit precedent controls. Any conflicting precedent from another sister Circuit yields to that of this Circuit. The Federal Circuit cannot bind this Court or the Fifth Circuit on regional law". In other words, per Judge Albright, "Motion Offense implores this court to strictly apply only Fifth Circuit law".
However, Judge Albright explained to the contrary that he is obligated to follow the Federal Circuit's interpretation of Fifth Circuit law:
"[T]his Court cannot and does not overrule the reasoning of the Federal Circuit in a patent case. Although the Federal Circuit issues unpublished, nonprecedential transfer opinions, the Federal Circuit frequently cites these opinions as though they precedentially interpret Fifth Circuit law. The Federal Circuit repeatedly cites Volkswagen I and Volkswagen II as the authority being followed".
As a result, he noted that Motion Offense's arguments "are more appropriately reserved for a higher court", proceeding to an analysis of the merits and concluding that the balance of the factors weighed in favor of transferring the case to the Northern District of California.
On September 15, Judge Albright stayed the case after Motion Offense notified the court that it intended to seek mandamus review of his decision from the Federal Circuit. However, the plaintiff does not appear to have filed such a petition as of the date of this article.
The Fifth Circuit's Planned Parenthood Decision
Then came the Fifth Circuit's October 31 Planned Parenthood decision, which provides a view of a district judge's discretion that possibly contrasts with the Federal Circuit's prior level of deference to Judge Albright's factual findings, and his related legal conclusions. The Fifth Circuit emphasized that "district courts have broad discretion in deciding motions to transfer", and that under its Volkswagen I opinion, such transfer rulings may be overturned "only for clear abuses of discretion that produce patently erroneous results". Per the Fifth Circuit, "[t]he standard for reversing that holding is high".
This is an issue that has even divided the Federal Circuit itself. In 2020, Circuit Judge Kimberly A. Moore dissented from a Federal Circuit majority's mandamus decision overturning a transfer denial in litigation brought by Fortress Investment Group LLC subsidiary Uniloc 2017 LLC, arguing that the majority's analysis exceeded the permissible bounds of mandamus review and improperly disturbed the district court's factual findings and conclusions. In particular, Judge Moore urged the majority to "recognize our limited role in this process", arguing that "there is no more deferential standard of review than clear abuse of discretion". Indeed, "[r]ather than conducting this limited review, the majority usurps the district court's role in the transfer process, disregards our standard of review and substitutes its judgment for that of the district court", Judge Moore underscored.
Time will tell if the Federal Circuit adjusts its approach in response to the Planned Parenthood decision's posture toward discretion, particularly now that Judge Moore is now the Federal Circuit's chief judge—especially since she expressed the view that the Uniloc majority's allegedly expanded approach runs counter to that Fifth Circuit's precedent: "I am not comfortable with the new role the majority has carved out for our court, and I believe it is inconsistent with the Fifth Circuit law that we are bound to follow".
Meanwhile, the Planned Parenthood decision's approach to the physical location of sources of proof appears to be less in line with current Federal Circuit thinking, and potentially more so with Judge Albright's posture. In that opinion, the Fifth Circuit cited a district court's finding that this factor weighed against transfer because "the vast majority of the evidence was electronic, and therefore equally accessible in either forum"—the appellate court additionally holding that the "location of evidence bears much more strongly on the transfer analysis when, as in Volkswagen, the evidence is physical in nature". Judge Albright has adopted an apparently consistent approach in prior decisions, finding that the transfer factor related to the location of evidence does not necessarily weigh toward transfer for evidence physically located in the transferee district when the evidence is easily accessible electronically. While he acknowledged in those rulings that prior Fifth Circuit precedent focuses on the physical location of such evidence, Judge Albright stated that he was acting consistently with his prior observation that this precedent is out-of-step with the modern realities of patent litigation. In a decision overruling one such opinion from Judge Albright (as detailed here), the Federal Circuit pointed out that the Fifth Circuit has held this factor to still be relevant regardless of remote access to evidence.
Other transfer considerations addressed by the Fifth Circuit included the factor related to the availability of compulsory process. Here, the court held that this factor "receives less weight when it has not been alleged or shown that any witness would be unwilling to testify". Notably, in its August 2021 decision from In re: Hulu, the Federal Circuit reversed Judge Albright for following that same approach, faulting him for following precedent from a different circuit on an issue with a higher standard of inconvenience (forum non conveniens) and remarking as follows: "We are not inclined to think that the Fifth Circuit would adopt this position in this case". In the wake of that Federal Circuit ruling, Judge Albright changed his approach to that factor accordingly.
The Fifth Circuit further indicated that for the factor concerning the cost of attendance for willing witnesses, it is within a district court's discretion to weigh the relative cost of travel (including hotels and flights) to a particular venue, another factor for which Judge Albright adjusted his analysis in light of Federal Circuit guidance, as well as whether the movant had unduly delayed the filing of a transfer motion.
Another factor revisited by the Fifth Circuit was the one relating to court congestion. Although the court acknowledged the Federal Circuit's warning from In re: Genentech that this factor is "speculative", the Fifth Circuit countered that "to the extent docket efficiency can be reliably estimated, the district court is better placed to do so than this court". This factor, too, has been at issue throughout the Federal Circuit's mandamus jurisprudence involving Judge Albright: while he previously cited his district's early scheduling of trials in finding that this tipped the factor against transfer, the appellate court held in its precedential In re: Juniper I decision that he could not rely on scheduling orders versus actual statistics on court congestion. In a later case, Judge Albright explicitly cited that holding in citing data offered by the plaintiff on actual time to trial, but the Federal Circuit determined that this was still too speculative in light of Genentech.
The Parties Spar over the Impact of the Planned Parenthood Decision
On November 4, Motion Offense filed a motion for reconsideration in light of Planned Parenthood in its case against Google. The plaintiff argued that the decision "confirms Fifth Circuit law governs the transfer motion and that the Federal Circuit is misinterpreting and misapplying it". In support of that argument, Motion Offense cited caselaw purportedly establishing that the Federal Circuit is bound to follow the procedural law of a regional circuit if it conflicts with its own law. As a result, under the allegedly higher standard established in Planned Parenthood, it argued that Judge Albright's decision, in following the Federal Circuit's view of Fifth Circuit law, had granted transfer "based on presumptions and vague assertions rather than evidence". The plaintiff then proceeded to identify portions of the court's analysis that would have turned the other way under Fifth Circuit law, including the factors related to the locations of sources of proof, the availability of compulsory process, and court congestion.
In contrast, Google's response accuses Motion Offense of "playing games with this Court and the judicial process" after declaring its plan to file a mandamus petition, noting that the plaintiff has not yet filed that petition. "Instead, it appears that Motion Offense simply sat on its hands and waited for an opportunity to ask this Court to reconsider its transfer decision. Now, after months of inaction, Motion Offense files a motion for reconsideration; perhaps sensing that its delay jeopardized its petition for mandamus"—citing a 2012 Federal Circuit ruling denying a mandamus petition that unfavorably cited the movant's delay in filing.
Moreover, Google argues that Motion Offense overstates the impact of the decision: "This motion is not based on any intervening change in law, previously unavailable new evidence, or need to correct a clear legal error, but on the basis of a Fifth Circuit decision denying a writ of mandamus", one that "simply applied the same, pre-existing transfer factors and rationale already considered by this Court in its transfer ruling". Google asserts that the plaintiff's request that the court decline to follow any Federal Circuit opinions on this matter, whether "published or unpublished", is both "unprecedented" and "premised solely on attorney argument; Motion Offense cites no case authorizing departure from the Federal Circuit in a patent case".
Two Related Plaintiffs Target Google
As the parties debate the impact of the Fifth Circuit's decision, as noted above, two related plaintiffs have also filed complaints against Google, albeit over a different set of accused products. While Motion Offense has alleged infringement through the data sharing or web browsing features found in the Google Drive platform; the Google Chrome browser, Chrome OS, and Android OS; and the Google Cloud platform, the new cases filed by American Inventor Tech, LLC and Grus Tech LLC focus more on mobile devices—both targeting smartphones that run the Android 13 operating system, including certain Google Pixel- and Nexus-series devices.
American Inventor Tech's suit ( 6:22-cv-01221) focuses on split-screen features that allow users to display multiple pieces of media and associated playback controls onscreen, as well as features allowing in-progress videos to scroll offscreen and stop playback when the user scrolls away. Through those features offered by the accused smartphones, Google is alleged to infringe three patents ( 10,397,639; 10,547,895; 10,750,230) generally related to managing media streams through a graphical user interface.
Grus Tech's case ( 6:22-cv-01220), meanwhile, zeroes in on features involving the selection of contacts within the Gmail app, alleging the infringement of four patents ( 10,353,552; 10,496,249; 10,754,505; 11,086,487) generally related to identifying a recipient for a message among contacts.
While both complaints were filed in the Western District of Texas's Waco Division, a July 25 standing order issued by then-Chief Judge Orlando L. Garcia ended the divisional filing rules that guaranteed plaintiffs would get Judge Albright when filing in Waco (where he is the only district judge). Rather, Waco's patent cases are now randomly assigned among a pool of 12 district judges, including Judge Albright. Neither of these new complaints has been assigned to Judge Albright under that new system: American Inventor Tech's case has been assigned to District Judge Fred Biery, and Grus Tech's to District Judge Lee Yeakel. See here for more on that standing order.
American Inventor Tech was formed in Texas on February 10, 2020 with public records identifying Andrew Gordon as its manager. Gordon also formed Grus Tech and Vulpecula, LLC in Texas just one day later; all three NPEs filed their first litigation the following month. early March with suits against each of LG Electronics (LGE) and Samsung in the Eastern District of Texas.
Gordon—who is also identified as a manager for Rafqua Star, LLC, yet another Texas NPE formed in February 2020 (but which has yet to file any litigation)—is a manager of Oso IP, LLC, a California monetization firm linked to a larger group of plaintiffs that have waged 25 litigation campaigns to date in total, including at least one other that has seen the Federal Circuit intervene over a Judge Albright venue decision (more details about which can be found here).
Originally published 04 December 2022
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